European Patent with Unitary effect and Unified Patent Court

The European Patent with Unitary Effect (EPUE) is designed to be a new type of European patent and is presently in an advanced stage of adoption and ratification. The EPUE will allow a granted European patent to be validated in each of the participating member states of the European Union. The European Patent Office states that the EPUE and the Unified Patent Court are “the building blocks that will supplement and strengthen [not replace] the existing centralised European patent granting system. [EPUE] will offer users of the patent system a cost-effective option for patent protection and dispute settlement across Europe”. The existing European Patent system will remain as an option, should applicants not want to pay the extra EPUE fee to obtain protection in all EPUE countries that will have signed the agreement.

On 17^th December 2012, an agreement was reached between the European Council and European Parliament on two EU regulations that made a unitary patent feasible through improved cooperation at EU level. The unitary effect allows for single ownership, a single renewal fee, based on a single object of ‘intellectual property’ and a single set of countries with uniform protection. This fundamentally means that revocation and infringement proceedings will be decided for the unitary patent as a whole, instead of within each European country individually. However, it is envisaged that licensing will remain possible for part of the (EU) unitary territory (i.e. to encompass some of the set of countries that have adopted the EPUE).

Unitary Patents will allow the Applicant to obtain patent protection in participating EU Member States by submitting a single request to the EPO. This is a much simpler and cost-effective procedure for applicants. However, the EPUE is subject to revocation in one action in multiple countries (in both the UPC as well as by the classical EPO opposition procedure). For UK Applicants, such a procedure will depend upon the details of any signed Brexit agreement. Using the Unified Patent Court as an international court for participating EU Members should also put an end to costly parallel litigation and enhance legal certainty across Europe for a granted patent, across all EPUE participating countries.

The EU regulations establishing the Unitary Patent system (No 1257/2012 and No 1260/2012) began on the 20^th January 2013, but will be applied from the date of entry of the UPC Agreement. Initially the target date for the introduction of the Unitary Patent was early 2014. However, the new EPUE system is now expected to start in the first half of 2020, having been continuously delayed over recent years. The Unitary Patent system is inextricably linked to the Unified Patent Court, which will have jurisdiction over Unitary Patents as well as “classic” European patents. The Unitary Patent system will come into force on the first day of the fourth month following the deposit of the 13^th instrument of authorisation, so long as the three Member States with the highest number of European patents (France, Germany, United Kingdom have signed). So far, France and the UK have ratified the Unitary Patent system. Obtaining the final German signatory has encountered problems due to objections filed within Germany’s Federal Constitutional Court.

Initially, the new EPUE system will not cover all participating EU member states, as some EU countries have not yet approved the UPC Agreement. As such, there may be different generations of Unitary Patents, with different territorial effects. The current standing of countries who have signed the UPC Agreement include: Austria, Belgium, Bulgaria, Denmark, Estonia, France, U.K., Italy, Lithuania, Luxembourg, Latvia, Malta, Netherlands, Portugal, Sweden and Finland. It is noteworthy that an Unitary Patent may be requested for any European patent granted on or after the date of entry into force of the UPC Agreement.

If/when the EPUE comes into force, it will cause a huge change to patent protection within Europe and will impact how future filing strategies will evolve. For an up to date status of the EPUE ratification, please visit the website of the ‘Council of the EU, Agreement on Unified Patent Court (UPC)’. If you have any questions, please do not hesitate to contact us.